Conflict in Enforcement of Intellectual Property Rights

This phenomenon is fairly common and a lot of disputes are dragging on without end. That is the conflict between domain name and brand name under Vietnamese law. Brand name with a sense of intellectual property rights such as trade names, geographical indications and appellations of origin of goods are usually registered by enterprises in association with their company brands or product brands. This makes it easier for customers to remember and not confuse goods/services of registering enterprises with other goods/services; for enterprises to boost popularity and build brand value with a consistent identity system developed in the Internet environment. However, they may see more harm than good. This comes from regulations on domain name: A domain name is granted with two conditions satisfied: first and only. Domain name registration agencies do not have to check whether a domain name registered is confused with others or not.

 

Similar phenomena also occur in the registration of product brand names associated with geographic names, as in the disputes over the ownership of Phu Quoc fish sauce brand name and Buon Ma Thuot coffee brand name.

 

A recent similar case is the legal conflict in granting industrial design protection for Sungaz analgesic cream of HCM City-based Dong Nam Duoc Truong Son Co., Ltd and granting applied artwork copyright protection on the surface of Gau MISA analgesic cream. In fact, these two products are quite confusable to consumers, but both protection documents are legal.

 

Granting authorities and granted parties seem to do nothing regarding the legal conflict when granting intellectual property protection certificates. While this case is vexing experts, a third party appears with documents proving the presence of Bengay analgesic cream produced by American drug maker Pfizer in Vietnam. Pfizer registered it for circulation in 1994 and re-registered it in 1999. Mr Hoang Van Tan, Deputy Director of National Office of Intellectual Property (NOIP), said Sungaz and Gau Misa are not fundamentally different from the industrial design of Bengay.

 

According to intellectual property experts at BROSS & PARTNERS Law Firm and Pham & Associates Law Office, to avoid the risk of conflicts among the above intellectual property subjects and to strengthen legal basis to prevent acts of appropriating domain names, trademarks, industrial designs and other properties, businesses should actively learn whether their subjects registered for protection duplicate with others or not, and make registrations as soon as possible.